What happens if a substantial new question of patentability (SNQ) is found during supplemental examination?
If a substantial new question of patentability (SNQ) is found during supplemental examination, the following occurs: Reexamination will be ordered under 35 U.S.C. 257. The Office may, at its discretion, reexamine claims other than those for which supplemental examination was originally requested. As stated in MPEP 2816.01: “If the examiner determines that a SNQ affecting…
Read MoreWhat regulations govern ex parte reexamination ordered under 35 U.S.C. 257?
Ex parte reexamination ordered under 35 U.S.C. 257 is generally governed by the same regulations as standard ex parte reexamination, with some specific exceptions. According to MPEP 2818.01: “Ex parte reexamination under 35 U.S.C. 257 will be conducted in accordance with 37 CFR 1.530 through 1.570, which govern ex parte reexamination, subject to the exceptions…
Read MoreCan a patent owner file a statement in ex parte reexamination ordered under 35 U.S.C. 257?
No, a patent owner cannot file a statement in ex parte reexamination ordered under 35 U.S.C. 257. This is one of the key differences from standard ex parte reexamination. According to MPEP 2818.01: “The patent owner will not have the right to file a statement pursuant to 37 CFR 1.530, and the order will not…
Read MoreHow is an ex parte reexamination ordered under 35 U.S.C. 257?
An ex parte reexamination under 35 U.S.C. 257 is ordered following a supplemental examination proceeding that finds a substantial new question of patentability. The process is as follows: A supplemental examination certificate is issued with reasons for the substantial new question of patentability. The examiner prepares an order for ex parte reexamination. The order may…
Read MoreHow is the material to patentability standard applied in reexamination under 35 U.S.C. 257?
In reexamination ordered under 35 U.S.C. 257, the material to patentability standard is defined by 37 CFR 1.56, which is the same standard used in patent application examination. This differs from standard ex parte reexamination under 35 U.S.C. 302, which uses the standard in 37 CFR 1.555(b). As stated in MPEP 2818.01: “The material to…
Read MoreHow does the duty of disclosure differ between ex parte reexamination under 35 U.S.C. 302 and 35 U.S.C. 257?
The duty of disclosure differs between ex parte reexamination proceedings under 35 U.S.C. 302 and 35 U.S.C. 257. MPEP 2280 explains: “The material to patentability standard set forth in 37 CFR 1.56(b), which is applicable to patent applications, and not the standard set forth in 37 CFR 1.555(b), applies in ex parte reexamination proceedings ordered…
Read MoreWhat are the key differences in ex parte reexamination ordered under 35 U.S.C. 257?
Ex parte reexamination ordered under 35 U.S.C. 257 has several key differences from standard ex parte reexamination: The patent owner cannot file a statement under 37 CFR 1.530. Reexamination can be conducted based on any item of information, not just patents and printed publications. Additional issues beyond those raised by patents and printed publications can…
Read MoreHow does the term “applicant” apply in reexamination under 35 U.S.C. 257?
In ex parte reexamination ordered under 35 U.S.C. 257, the term “applicant” is interpreted differently than in standard patent applications. According to MPEP 2818.01: “Any reference to ‘applicant’ in 37 CFR 1.56(b) will be read as ‘patent owner’ in the context of a supplemental examination proceeding and any resulting ex parte reexamination proceeding under 35…
Read MoreWhen can amendments be filed in ex parte reexamination under 35 U.S.C. 257?
In ex parte reexamination ordered under 35 U.S.C. 257, amendments cannot be filed immediately. According to MPEP 2818.01: “No amendment in an ex parte reexamination proceeding ordered under 35 U.S.C. 257 may be filed until after the mailing of a first Office action on the merits.“ This restriction ensures that the initial examination is based…
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